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IMAM 

Modern  American  Law 
Lecture 


HOW  TO  CHOOSE  AND  PROTECT  A 
TRADEMARK 


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BLACKSTONE    INSTITUTE 
CHICAGO 


'■■  '    '  *  '     -:.   '..      : 


HOW  TO  CHOOSE  AND  PROTECT  A 
TRADEMARK 


BY 

WILLIAM  L.  SYMONS,  LL.M.,  M.  P.  L. 

EXAMINER,  UNITED  STATKS  PATENT  OFFICE 


One  of  a  Series  of  Lectures  Especially  Prepared 
for  the  Blackstone  Institute 


BLACKSTONE     INSTITUTE 
CHICAGO 

Copyright,  1915,  hy  Blackstone  Instiotte 


T 


WILLIAM  L.  SYMONS 


A 


WILLIAM  L.  SYMONS 

Mr.  Symons  is  an  Examiner  in  the  Interference 

Department  of  the  Patent  Office.  He  has  held  this 
position  for  a  number  of  years,  and  was  appointed 
after  five  years  of  experience  on  the  Board  of  Pen- 
sion Appeals.  In  tins  office  he  wrote  decisions  in 
pension  and  bounty  land  cases  for  the  Secretary  of 
the  Interior. 

The  State  of  Ohio  can  claim  Mr.  Symons  as  one 
of  her  sons.  He  was  horn  in  Cleveland,  and  after 
a  high  school  training  taught  school  for  three 
years.  Appreciating  the  tremendous  advantages 
of  a  law  training,  he  accepted  a  civil  service  position 
in  Washington,  D.  C,  in  order  to  enroll  in  the  law 
department  of  Columbian  University,  now  George 
Washington  University.  Here  he  received  the  de- 
gree of  Bachelor  of  Laws,  and  after  a  post-graduate 
course  the  degree  of  Master  of  Laws.  Later  he 
qualified  for  the  degree  of  Master  of  Patent  Law. 

Mr.  Symons  is  a  lecturer  at  the  George  Washing- 
ton University  on  the  subject  of  Trademarks,  Copy- 
rights and  Unfair  Competition.  He  has  also  writ- 
ten a  number  of  treatises  relating  to  these  subjects. 
Special  mention  should  be  made  of  "Law  of  Pat- 
ents for  Design,"  "Copyrights  of  Prints  and  La- 
bels," and  "Law  of  Copyrights"  and  "Law  of 
Trademarks"  in  Modern  American  Law. 

His  experience  in  research  work,  together  with 
his  training  in  the  application  of  legal  principles 
to  close  cases,  has  given  him  a  clear,  simple  diction 
in  his  statement  of  the  rules  of  law.  This  Lecture, 
therefore, is  not  alone  valuable  because  of  its  direct 
bearing  upon  business,  but  delightful  because  of 
its  easy  reading  style.  Tt  will  give  the  reader  many 
new  ideas  and  open  up  to  him  the  vast  field  for 
the  use  of  trademarks. 


HOW  TO  CHOOSE  AND  PROTECT  A 
TRADEMARK 

By 

William  L.  Symons,  LL.M.,  M.P.L. 

A  good  trademark  or  a  distinctive  label  is  now  rec- 
ognized as  a  valuable  asset.  To  be  valuable,  how- 
ever, it  must  be  of  a  certain  character.  Some  marks 
do  not  aid  in  the  sale  of  the  goods  upon  which  they 
are  placed.  Other  marks,  although  valuable  for  a 
short  time,  soon  cease  to  be  attractive.  Marks  which 
are  the  name  of  a  passing  craze  are  of  this  character. 
Great  care  should  therefore  be  exercised  in  adopting 
a  trademark.  Time  spent  in  determining  what  mark 
to  adopt  is  not  wasted;  investigations  made  for  the 
purpose  of  finding  out  whether  the  mark  one  wishes 
to  adopt  is  in  use  often  prevents  expense  and  loss 
later. 

IF  THE  MARK  HAS  NOT  BEEN  SELECTED 

If  a  merchant,  a  manufacturer  or  any  character  of 
trader  or  dealer  in  merchandise  has  not  selected  an 
identifying  mark  for  his  goods,  and  in  these  days  it 
is  considered  most  desirable  to  have  such  a  mark  in 
order  that  his  goods  may  be  recognized  by  the  ulti- 
mate consumer — how  should  he  proceed  in  order  to 
obtain  a  valuable  trademark?    As  much  genius  was 

5 


6  MODERN  AMERICAN  LAW  LECTURE 

shown  in  discovering,  selecting  and  advertising  such 
marks  as  Kodak,  Uneeda,  Sapolio  and  Gold  Dust, 
as  was  required  to  produce  some  of  the  noted  inven- 
tions of  modern  times.  Do  not  think  it  is  easy,  there- 
fore, to  obtain  a  good  mark. 

A  mark  should  be  in  keeping  with  the  goods.  This 
does  not  mean  that  it  should  describe  them.  A  pic- 
ture of  a  dove  would  obviously  be  inappropriate  as  a 
trademark  for  steel  plates  or  threshing  machines, 
while  it  might  be  a  good  mark  for  infants'  clothing. 
The  picture  of  a  girl  is  an  appropriate  trademark 
for  flour,  or  hair  nets,  or  hosiery,  but  it  could  hardly 
be  successfully  advertised  as  a  trademark  for  felt 
roofing,  saws  or  plows.  Marks  which  are  common 
and  which  have  been  used  upon  many  kinds  of  goods 
are  not  valuable  marks  to  apply  to  a  new  line  of  mer- 
chandise. A  star  for  beer  is  regarded  as  a  mark 
which  anyone  may  use  on  that  article.  Such  words 
as  "Excelsior,"  "Standard"  and  "Arrow,"  although 
well  known  marks  in  some  lines  of  trade,  have  been 
so  widely  used  that  it  is  doubtful  if  the  public  can 
now  be  educated  to  recognize  new  goods  by  these 
old  marks.  Prize  contests  to  secure  a  valuable  mark 
have  often  been  resorted  to  with  good  results. 

INVESTIGATION  TO  BE  MADE 

Before  adopting  a  mark,  especially  if  it  is  to  be 
retained  as  a  permanent  mark  in  a  dealer's  business, 
he  should  have  a  thorough  investigation  made  to  de- 
termine if  it  is  in  use  on  goods  of  the  same  general 
kind  as  the  goods  upon  which  he  wishes  to  use  it. 
A  search  of  the  records  of  the  United  States  Patent 


HOW  TO  PROTECT  TRADEMARKS  7 

Office  may  first  be  made  to  determine  if  the  mark  he 
has  in  view  has  been  registered.  He  may  make  this 
search  in  person  or  employ  an  attorney  or  agent  to 
make  it  for  him.  There  is  no  fee  charged  by  the  gov- 
ernment for  the  privilege  of  examining  its  records. 
A  thorough  search  of  the  official  class  of  goods  in 
which  his  particular  article  is  classified  may  be  made, 
or  an  examination  of  the  Word  and  Symbol  digest, 
which  can  be  made  quickly,  may  suffice.  Which 
search  should  be  made  depends  largely  upon  the 
character  of  the  mark. 

A  general  idea  of  the  manner  in  which  the  copies 
of  trademark  certificates  are  arranged  in  the  United 
States  Patent  Office  is  advisable. 

All  registrations  are  divided  into  forty-nine 
classes.  This  division  is  made  in  accordance  with 
the  character  of  the  goods  upon  which  marks  are 
used.  This  division  is  designated  the  Digest  of  Mer- 
chandise. The  registrations  are  arranged  numeri- 
cally in  these  classes.  It  is  sometimes  difficult  to  tell 
in  which  of  two  or  more  of  the  forty-nine  official 
classes  a  trademark  owner's  goods  should  be  classi- 
fied. In  such  a  case,  as  there  is  no  public  official 
index  showing  the  proper  classification  of  particu- 
lar goods,  search  should  be  made  through  the  classes 
which  are  closely  related  and  in  one  of  which  the 
goods  should  be  classified.  This  search  in  some  of 
the  classes  requires  a  day  or  more,  even  for  one 
fairly  expert.  The  Word  and  Symbol  Digest  is  based 
upon  the  character  of  the  marks  without  regard  to 
the  goods  upon  which  they  are  affixed.  The  word 
marks  are  all  arranged  in  dictionary  order  and  sealed 


8  MODERN  AMERICAN  LAW  LECTURE 

in  packages  of  convenient  size.  The  symbols  are 
divided  into  Animate  and  Inanimate.  The  Animate 
are  subdivided  into  Human,  Animal,  Vegetable  and 
Mythological.  Some  of  these  subclasses  are  further 
divided  in  a  manner  which  is  easily  understood  on 
inspection  of  the  digest.  The  Inanimate  symbols 
are  subdivided  into  "Articles  of  Manufacture"  and 
" Objects  Not  Articles  of  Manufacture."  The  latter 
is  again  subdivided  into  convenient  groups.  This 
Word  and  Symbol  Digest  enables  a  fairly  accurate 
search  to  be  made  in  a  short  time. 

To  make  a  search  to  find  out  whether  the  mark 
under  consideration  has  been  registered  in  any  of  the 
states  of  the  United  States  involves  considerable 
trouble  and  expense.  Only  in  exceptional  cases  would 
the  result  justify  so  extensive  an  investigation  as 
would  be  necessary  to  be  sure  that  the  mark  had  not 
been  registered  in  any  of  the  states.  An  examination 
of  the  appropriate  records  of  the  state  in  which  the 
person  interested  is  located  and  probably  of  the  ad- 
joining states  is  sometimes  advisable. 

A  very  important  source  of  information  is  the  trade 
catalogues  which  have  been  published  in  nearly  all 
the  important  lines  of  trade.  These  catalogues  con- 
tain an  alphabetical  list  of  all  the  known  marks  used 
on  a  particular  class  of  goods.  Catalogues  of  the 
soap  and  tobacco  trade,  for  instance,  show  long  lists 
of  marks  in  use. 

There  are  in  the  United  States  several  widely 
known  private  registration  bureaus  for  the  registra- 
tion of  trademarks.  These  bureaus  have  various 
ways  of  securing  knowledge  of  " going"  trademarks. 


HOW  TO  PROTECT  TRADEMARKS  9 

Some  register  the  mark  of  an  applicant  for  a  small 
fee,  advising  him  before  doing  so  if  the  mark  is  in 
use  by  another;  other  registration  companies  agree 
to  advise  a  registrant  with  them  of  any  infringement 
of  its  subscribers'  marks.  The  information  in  the 
possession  of  these  bureaus  therefore  often  justifies 
obtaining  information  from  them. 

Trade  journals  which  contain  advertisements  of 
the  goods  of  the  kind  on  which  the  investigator's 
mark  will  be  used  may  be  examined  to  good  advan- 
tage. 

This  exhaustive  search  to  determine  whether  the 
mark  is  in  use  is  advisable  in  order  to  avoid  such  a 
condition  as  this  which  has  often  occurred.  A  fruit 
grower  or  dealer,  for  instance,  commences  business 
in  a  small  way  in  Florida,  using  his  mark  on  various 
kinds  of  citrus  fruits.  By  skill,  industry  and  honest 
dealing,  in  a  few  years  he  establishes  a  good  reputa- 
tion for  his  fruits  under  his  trademark  by  which  the 
purchasing  public  has  begun  to  recognize  his  goods. 
His  trademark,  which  has  now  become  valuable,  be- 
comes the  crystallized  good  will  of  his  business. 
Others  are  now  willing  to  advance  him  capital  on 
the  reputation  he  has  established  and  he  is  enabled 
to  enlarge  and  extend  his  business.  In  preparing 
to  do  so  he  spends  relatively  large  sums  on  boxes, 
wrappers,  cartons,  stencils,  plates  and  advertising. 
Just  as  he  is  ready  to  go  into  the  broader  field 
which  success  has  entitled  him  to  enter,  a  com- 
petitor who  may  be  located  in  California,  discovers 
the  Florida  dealer's  use  of  his  mark  which  he  has 
used  continuously  from  a  prior  date.    Under  these 


10  MODERN  AMERICAN  LAW  LECTURE 

circumstances  the  successful  Florida  dealer  must 
either  buy  out  his  California  competitor  or  stop  using 
his  mark.  To  do  the  former  may  be  expensive  if  the 
California  trader  has  established  a  reputation  for  his 
fruit  or  has  investigated  the  value  to  the  Florida 
dealer  or  of  his  use  of  it.  To  change  his  mark  results 
in  the  loss  of  all  paraphernalia,  stock  of  labels,  car- 
tons and  the  advantages  of  careful  advertising.  The 
conditions  described  here  often  occur.  This  unfor- 
tunate position  of  the  owner  of  a  mark  might  have 
been  avoided  by  proper  investigation  before  use  was 
begun. 

MARKS  WHICH  SHOULD  NOT  BE  ADOPTED 

Public  Insignia  and  Marks  Against  Public  Policy. 
— Although  there  are  some  valuable  marks  in  use 
which  consist  of  public  insignia,  such  as  a  flag  or  a 
coat  of  arms,  or  which  consist  in  part  of  public  insig- 
nia, it  is  not  regarded  as  good  policy  now  to  adopt 
such  a  mark.  Strong  efforts  are  being  made  to  have 
a  Federal  law  passed  prohibiting  the  use  of  the  flag 
of  the  United  States  in  trade.  Even  if  such  a  law  is 
not  passed,  public  sentiment  against  what  is  in  some 
quarters  regarded  as  desecration  of  the  flag  is  against 
the  use  of  the  flag  of  the  Nation  as  a  mere  trademark 
for  an  article  of  manufacture.  Public  insignia  marks 
are  not  registrable  under  the  Federal  trademark  law. 
This  fact  should  be  enough  to  deter  anyone  who  has 
any  foreign  business  from  using  such  a  mark,  for 
without  registration  in  the  home  country,  registra- 
tion may  be  obtained  in  very  few  instances  in  a  for- 
eign country,  and  without  such  registration  the  mark 


HOW  TO  PROTECT  TRADEMARKS  11 

may  not  generally  be  protected  in  a  foreign  country. 
Some  courts  of  equity  have  gone  so  far  as  to  refuse 
protection  to  a  mark  containing  national  flags  on  the 
ground  that  as  the  trademark  law  of  the  United 
States  does  not  permit  registration  of  a  mark  of  this 
character,  it  is  contrary  to  the  public  policy  of  this 
country  to  give  protection  to  such  marks. 

A  picture  of  an  ex-president  of  the  United  States, 
whether  he  be  living  or  dead,  is  a  good  mark  in  some 
respects  but  in  others  it  is  not,  for  the  present  prac- 
tice of  the  United  States  Patent  Office  is  to  refuse 
to  register  such  a  mark,  and  a  mark  not  registrable 
here  is  as  a  rule  not  capable  of  adequate  protection 
abroad.  It  is  fair  to  say  that  this  is  a  new  policy 
and  may  be  reversed.  Many  marks  containing  pic- 
tures of  former  presidents  have  been  registered. 

It  is  a  violation  of  law,  a  Federal  statute,  to  use  the 
words  "Red  Cross"  or  the  symbol  of  the  Greek  Red 
Cross  or  the  Geneva  Cross  in  trade  or  for  the  pur- 
pose of  inducing  the  sale  of  any  article  unless  the  use 
of  this  mark  was  begun  prior  to  January  5,  1905. 
The  American  National  Red  Cross  has  now  the  exclu- 
sive right  to  use  these  words  and  this  insignia  in  the 
United  States. 

Deceptive  Marks. — A  mark  deceptive  in  itself  or 
used  in  connection  with  deceptive  matter  is  not  a  valid 
mark.  Courts  of  equity  have  consistently  refused  to 
sanction  a  right  to  impose  upon  the  public.  A  mark 
which  indicated  that  a  medicine  contained  a  certain 
valuable  ingredient  when  the  fact  was  that  no  such 
ingredient  was  used  in  the  manufacture  of  the  medi- 
cine was  denied  protection.    Such  a  mark  is  open  to 


12  MODERN  AMERICAN  LAW  LECTURE 

all  infringers.  A  mark  which  indicates  falsely  the 
place  of  origin  of  an  article  of  manufacture  is  not  a 
valid  mark.  A  mark  which  indicates  that  the  cigars 
on  which  it  is  used  were  made  in  Cuba,  when  they 
were  manufactured  in  the  United  States,  is  not  en- 
titled to  protection.  A  mark  which  untruthfully 
states  that  the  soap  on  which  it  appears  was  manu- 
factured in  Europe,  and  which  might  therefore  de- 
ceive people  from  that  part  of  the  world  into  the 
belief  that  it  was  manufactured  there,  is  not  a  valid 
mark.  A  statement  contrary  to  the  fact  that  a  brand 
of  whiskey  was  manufactured  in  a  certain  manner 
and  was  for  tins  reason  of  superior  quality,  prevented 
the  owner  of  a  mark  thus  falsely  used  from  protect- 
ing his  trademark. 

Fair,  honest  dealing  is  a  fundamental  principle  of 
the  law  of  trademarks.  Any  conduct  which  violates 
this  basic  idea  is  abhorrent  to  the  development  of  this 
branch  of  the  law.  One  of  the  reasons  for  the  in- 
creased consideration  given  each  year  to  the  subject 
of  trademarks  is  that  they  are  especially  adapted  to 
fit  into  the  new  industrial  conditions  which  are  begin- 
ning to  prevail.  Trademarks  make  for  honest  deal- 
ing, for  publicity,  for  uniform  prices  to  all. 

FOREIGN  WORDS  AND  COLOR  MARKS 

A  foreign  word  usually  should  not  be  selected  as 
a  trademark  if  the  English  equivalent  would  not  be 
a  good  mark.  The  fact  that  a  foreign  word  has  a 
pleasing  sound  or  is  attractive  to  the  eye  should  not 
weigh  in  its  favor  if  it  is  not  capable  of  protection 
after  it  has  by  use  and  extensive  advertising  acquired 


HOW  TO  PROTECT  TRADEMARKS  13 

considerable  value.  "  Tipo-Chianti, "  for  a  kind  of 
wine,  has  been  held  to  be  an  ordinary  Italian  word 
descriptive  of  the  goods  upon  which  it  was  used  and 
therefore  not  capable  of  protection  as  a  valid  trade- 
mark. 

Color  marks  are  particularly  desirable  in  some 
classes  of  goods.  Such  marks  are  used  effectively  on 
hose,  rope,  and  electric  conduits.  A  colored  strand 
placed  longitudinally  of  the  goods  or  helically  on 
them  is  effective,  for  no  matter  what  amount  is  used 
the  mark  is  still  on  the  goods.  A  user  of  such  a  mark 
should,  however,  have  a  definite  color  or  colors  and 
should  uniformly  affix  them  at  a  certain  place  so  that 
the  public  may  be  definitely  advised  what  mark  is 
claimed.  A  mark  of  a  certain  color — red  for  in- 
stance— according  to  the  holding  of  some  courts,  pre- 
vents others  from  using  the  same  mark  in  any  other 
color.  If  registration  in  the  United  States  Patent 
Office  is  obtained,  it  must  be  for  a  certain  color,  defi- 
nitely located.  The  Supreme  Court  of  the  United 
States  has  held  invalid  a  registration  of  a  mark  for 
an  indefinite  color  which  was  not  located  in  some 
particular  place  upon  the  goods. 

The  color  of  a  conventional  package  cannot  be 
claimed  as  a  valid  mark.  The  courts  do  not  sanction 
a  claim  to  a  mark  which  would  prevent  dealers  from 
using  the  ordinary  colors  of  wrapping  paper  or  from 
making  a  package  or  receptacle  attractive  by  means 
of  various  colored  paints. 

Words  like  Red,  Yellow  and  Blue  Label,  which 
may  designate  the  color  of  the  package  or  receptacle 
or  of  the  goods,  should  not  be  selected  as  trademarks ; 


14  MODERN  AMERICAN  LAW  LECTURE 

nor  are  colored  parts  of  a  structure  valid  marks  if  it 
is  common  in  the  trade  to  which  the  particular  goods 
relate  to  paint  parts  of  the  goods  certain  colors.  It 
is  very  doubtful  if  the  core  of  a  rope  of  a  definite 
color  is  a  valid  mark,  in  view  of  the  fact  that  the  core 
of  ropes  has  been  made  for  a  long  time  of  material 
of  a  certain  color,  as  is  shown  by  the  old  patents 
issued  for  inventions  in  various  styles  of  rope. 

NAME  OF  A  PATENTED  ARTICLE 

The  name  by  which  a  patented  article  is  known 
during  the  term  of  the  patent  is  not  a  valid  mark  to 
which  the  owner  has  the  exclusive  right  after  the 
expiration  of  the  patent.  If  a  certain  name  or  design 
has  become,  while  the  patent  is  in  force,  the  identify- 
ing designation  of  the  patented  device,  everyone  who 
wishes  to  make,  use  or  sell  that  device  after  the  pat- 
ent has  expired  may  use  the  name  by  which  the  device 
has  become  known.  It  is  true  no  one  will  be  per- 
mitted to  use  the  name  of  the  article  on  which  the 
patent  has  expired  in  such  a  manner  that  the  pur- 
chasing public  would  be  led  to  believe  that  the  device 
manufactured  by  another  was  manufactured  by  the 
patentee,  but  any  one  may  call  his  article,  manufac- 
tured in  accordance  with  the  terms  of  the  patent,  by 
the  name  of  the  patented  article  while  clearly  dis- 
tinguishing his  manufacture  by  appropriate  words 
from  the  device  manufactured  by  the  former  holder 
of  the  patent.  Thus  it  was  held  that  after  the  patent 
on  the  Singer  sewing  machine  expired,  any  one  was 
justified  in  designating  the  machine  made  in  accord- 
ance with  the  provisions  of  the  expired  patent  as  a 


HOW  TO  PROTECT  TRADEMARKS  15 

Singer  machine.  It  therefore  follows  that  the  owner 
of  a  patent  loses  the  exclusive  right  to  the  mark 
which  he  may  have  made  famous  before  his  patent 
expired  on  the  expiration  of  the  patent,  and  can  after 
that  date  protect  his  use  of  the  mark  only  under  the 
doctrine  of  unfair  competition. 

The  practical  question  at  once  arises,  How  may 
the  patentee,  after  the  patent  has  expired,  maintain 
the  exclusive  right  to  the  mark  which  he  used  on 
his  patented  article  while  he  only  could  make  that 
article  ?  If  the  mark  used  has  become  the  identify- 
ing mark,  there  is  no  way  to  do  this.  To  do  so  would 
extend  the  life  of  the  patent  monopoly  which  is  con- 
trary to  the  statutes  and  the  theory  of  the  patent 
system. 

If  the  mark  is  used  on  an  article  prior  to  the  time 
when  some  features  of  it  are  made  in  accordance 
with  the  specification  of  a  patent,  the  expiration  of 
the  patent  will  not  generally  terminate  the  right  to 
the  trademark.  If  a  device  embodies  some  of  the 
features  of  several  patents,  but  not  all  of  them,  and 
other  devices  are  made  in  accordance  with  different 
patents  and  different  trademarks  are  applied  to  the 
various  devices,  the  expiration  of  the  patents  will 
not  usually  terminate  the  right  to  the  trademark. 

This  peculiar  condition,  which  rarely  occurs,  has 
enabled  an  inventor  to  protect  his  trademark  after 
the  expiration  of  the  patent.  If  the  producers  of 
goods  of  the  kind  manufactured  by  the  patentee  after 
his  patent  has  expired  respect  his  exclusive  use  of 
the  mark  for  a  term  of  years,  say  eight  or  ten  years, 
the  courts  have,  at  the  expiration  of  that  time,  com- 


16  MODERN  AMERICAN  LAW  LECTURE 

pelled  others  to  refrain  from  using  the  mark,  appar- 
ently on  the  theory  that  the  exclusive  use  for  such 
a  long  time  had  so  identified  the  mark  with  the  for- 
mer patentee  that  for  anyone  else  to  use  it  would  be 
a  deception  of  the  public.  This  state  of  facts  rarely 
exists  in  trade. 

DESCRIPTIVE  WORDS  AND  GEOGRAPHICAL  TERMS 

No  exclusive  right  can  be  maintained  by  anyone  to 
a  descriptive  word  or  a  geographical  term  to  desig- 
nate his  goods.  A  word  which  describes  an  article 
of  commerce  or  some  characteristic  of  that  article 
belongs  to  every  one  who  fairly  uses  it.  It  being  a 
well  recognized  custom  in  trade  to  apply  the  name  of 
the  place  of  production  to  articles  of  merchandise, 
no  dealer  has  the  right  to  prevent  others  from  truth- 
fully using  the  name  of  the  place  of  origin  of  his 
goods. 

The  United  States  Supreme  Court  in  one  case 
pointed  out  that  the  words  "Iron  Bitters''  described 
the  ingredients,  characteristics  and  purposes  of  the 
goods  upon  which  they  were  used  and  could  there- 
fore not  be  a  valid  trademark.  Any  other  manufac- 
turer of  bitters  in  which  iron  was  an  ingredient  had 
the  right  to  say  to  the  public  that  what  he  manufac- 
tured was  iron  bitters  so  long  as  he  did  not  falsely 
indicate  that  his  medicine  was  manufactured  by  an- 
other. The  same  court  has  recently  said  that  a 
merely  misspelled  descriptive  word  is  not  a  valid 
mark. 

The  same  rules  apply  to  geographical  terms. 
"Tabasco,"  "Columbia,"  "American"  and  "Elgin" 


HOW  TO  PROTECT  TRADEMARKS  17 

have  all  been  decided  to  be  marks  to  which  no  one 
can  have  an  exclusive  right.  In  order  to  protect  his 
mark  fully  as  a  trademark  a  trader  should  not  use 
a  geographical  term. 

Some  words  which  indirectly  indicate  a  charac- 
teristic of  an  article  are  generally  regarded  by  the 
courts  and  merchants  as  valid  marks.  " Ideal," 
"Excelsior,"  " Unique,"  ''Holeproof,"  "Cottolene" 
and  "Elastic"  are  of  this  class. 

SURNAMES 

It  is  common  practice  for  dealers  in  some  lines  of 
goods  to  use  their  names  as  trademarks.  This  is  not 
to  be  recommended.  Full  protection  can  not  be  ob- 
tained for  a  surname  mark.  While  the  first  to  use  a 
surname  may  prevent  another  from  using  his  name 
in  such  a  manner  that  the  ordinary  purchaser  will 
be  deceived,  it  is  true  that  the  courts  find  it  almost 
impossible  to  protect  such  a  mark  from  all  infringe- 
ment. A  plaintiff  has  the  burden  of  establishing  in- 
fringement, and  it  is  sometimes  better  to  stand  a 
certain  amount  of  loss  of  trade  rather  than  to  sue 
for  an  invasion  of  one's  rights.  The  best  way  to 
avoid  such  a  condition  is  not  to  use  a  mark  which 
can  not  be  satisfactorily  protected.  The  law  is  thor- 
oughly settled  that  a  personal  name  is  not  subject  to 
exclusive  appropriation ;  any  one  of  the  name  has  a 
right  to  use  it  fairly. 

Portraits  of  individuals  often  become  the  most 
valuable  marks  in  use.  The  picture  of  Mennen  is  an 
enormous  asset  to  the  users.  The  portraits  of  cele- 
brated  individuals   are   among   the   most   valuable 


18  MODERN  AMERICAN  LAW  LECTURE 

marks.  The  Edison  and  Franklin  marks  are  exam- 
ples. A  picture  of  a  celebrated  living  individual 
should,  however,  not  be  used  without  his  consent. 
Some  of  the  states  prohibit  by  special  laws  the  use 
of  the  picture  of  a  living  individual  in  trade  without 
his  consent,  and  the  United  States  Patent  Office  is 
prohibited  by  law  from  registering  such  a  mark  with- 
out the  consent  of  the  person  whose  picture  is  used. 
There  are  many  reasons  for  using  the  pictures  of 
deceased  celebrities  as  trademarks.  The  public  has 
been  educated  to  recognize  the  picture  of  such  an 
individual ;  this  is  no  small  advantage.  Such  a  mark 
is  not  easily  infringed ;  a  picture  is  or  is  not  the  por- 
trait of  a  celebrity,  and  there  can  therefore  be  very 
little  contention  upon  the  question  of  infringement. 
The  only  deceased  celebrities  whose  pictures  may  not 
be  registered  in  the  United  States  Patent  Office,  as 
has  been  stated,  are  those  of  former  presidents  of  the 
United  States.  It  must  appeal  to  every  one  that  the 
pictures  of  some  celebrated  individuals  are  adapted 
for  use  as  a  mark  for  certain  goods  only.  Why  a 
picture  of  a  historical  character  may  not  be  success- 
fully applied  to  some  goods  but  may  be  used  with 
others  is  hard  to  set  out  in  words,  but  it  will  be 
readily  appreciated  after  some  study  of  the  law  of 
trademarks  if  the  characteristics  of  the  person  and 
the  goods  are  taken  into  consideration. 

SIMILAR  MARKS  IN  USE  ON  THE  SAME  CLASS  OF 

GOODS 

No  one  should  adopt  a  mark  which  is  already  in 
use  on  the  same  general  class  of  goods,  for  the  first 


HOW  TO  PROTECT  TRADEMARKS  19 

to  adopt  and  continuously  use  is  the  owner  of  the 
mark.  A  most  important  inquiry,  then,  is  whether 
the  mark  is  in  use  anywhere  in  the  United  States  on 
the  class  of  goods  upon  which  it  is  desired  to  use  it. 
One  who  proposes  to  use  a  mark  must  be  the  first  to 
use  in  order  to  protect  it. 

If  investigation  does  not  show  use  of  the  trade- 
mark which  a  trader  desires  to  adopt,  then  no  further 
inquiry  is  necessary,  but  if  it  is  found  that  it  is  used 
it  then  becomes  an  important  matter  to  determine 
whether  the  goods  upon  which  it  is  used  are  of  the 
same  general  class,  or,  as  some  of  the  statutes  state, 
whether  your  goods  are  of  the  same  descriptive  prop- 
erties as  the  goods  of  the  earlier  user  of  the  mark. 
If  they  are,  then  you  are  not  entitled  to  use  the  mark. 
If  they  are  not,  you  may  legally  use  that  mark. 
Whether  another  may  rightly  use  upon  an  entirely 
different  class  of  goods  a  mark  which  has  been  made 
famous  by  extensive  advertising  and  fair  dealing 
admits  of  doubt.  A  great  many  dealers  regard  as 
unfair  the  use  of  a  celebrated  mark  upon  a  line  of 
goods  entirely  different  from  that  upon  which  the 
mark  has  been  used.  A  court  of  equity  will  not,  how- 
ever, enjoin  the  use  upon  a  line  of  goods  so  different 
from  that  upon  which  it  has  been  used  that  the 
ordinary  purchaser  will  not  be  led  to  believe  that  the 
original  user  is  the  producer  or  guarantor  of  those 
goods ;  or  if  the  new  line  of  goods  is  so  different  that 
it  could  not  be  fairly  considered  as  a  natural  devel- 
opment of  the  business  of  the  original  user  of  the 
mark.  Hosiery  and  knit  underwear  have  been  held 
to  be  so  similar  that  the  first  user  of  a  mark  on  one 


20  MODERN  AMERICAN  LAW  LECTURE 

of  these  goods  was  entitled  to  prevent  another  from 
registering  the  mark  on  the  other  goods.  In  another 
case  the  same  court  decided  that  hair  pins  are  not  of 
the  same  descriptive  properties  as  hooks  and  eyes 
and  refused  to  prevent  registration  to  the  second  to 
use  upon  one  kind  of  goods  the  mark  which  had 
been  previously  used  on  the  other.  These  are  close 
cases.  Usually  the  question  is  not  so  very  difficult 
to  decide. 

In  order  that  there  may  be  no  question  about  the 
right  to  use  a  mark,  if  use  by  another  of  the  same 
mark  upon  goods  of  the  same  general  characteristics 
is  found,  that  mark  should  not  be  adopted.  Use  of 
a  mark  about  which  there  is  some  question  should 
not  be  begun ;  there  is  just  as  much  reason  for  refus- 
ing to  take  up  the  use  of  a  mark  when  the  right  to 
its  exclusive  use  is  not  clear  as  there  is  for  refusing 
to  buy  a  piece  of  real  estate  to  which  the  title  is 
defective. 

USE 

In  the  United  States,  use  determines  the  right  to 
a  mark ;  intention  to  use  without  use  is  of  no  value  in 
securing  title.  What  constitutes  use  is  therefore  of 
prime  importance.  A  public  declaration  that  a  mark 
will  be  used  is  not  sufficient  to  establish  the  exclusive 
right  to  it ;  nor  does  the  publication  of  the  mark  in  a 
catalogue  or  trade  circular,  establish  title  to  it.  It 
must  be  actually  placed  upon  or  associated  with  the 
goods  as  an  identifying  mark. 

A  user  of  a  mark  in  a  small  way  is  entitled  to  the 
same  protection  as  a  large  user,  the  right  to  a  mark 


HOW  TO  PROTECT  TRADEMARKS  21 

not  being  determined  by  the  extent  of  use.  The  con- 
tention that  a  great  corporation  which  distributes 
its  goods  over  many  states  is  entitled  to  a  mark  which 
another  had  earlier  used  in  a  small  way  has  not 
received  approval.  Bona  fide  continuous  use  in  a 
small  way  is  entitled  to  protection. 

The  right  to  a  mark  may  be  lost  by  abandonment 
after  use  has  been  established.  The  right  may  not 
be  kept  if  use  in  trade  is  discontinued  for  a  number 
of  years  unless  some  particular  circumstances  are 
shown  which  strongly  indicate  that  there  was  no 
intent  to  give  up  the  right  to  use  the  mark.  Care 
should  be  exercised  in  buying  the  right  to  a  mark 
and  the  business  with  which  it  is  used  to  determine 
that  the  owner  has  not  stopped  using  it  so  long  that 
he  has  nothing  to  sell. 

ASSIGNMENT 

A  valid  assignment  must  identify  the  mark  assigned 
and  must  convey  the  good  will  of  the  business  with 
which  the  mark  has  been  used.  It  is  important  that 
a  purchaser  ascertain  that  there  is  a  "going  busi- 
ness" with  which  the  mark  he  proposes  to  buy  is  used. 
If  there  is  not,  then  no  valid  assignable  trademark 
right  exists. 

The  owner  of  a  trademark  who  wishes  to  sell  it 
must  not  abandon  it,  but  must  continue  a  bona  fide 
use  of  it  until  such  time  as  he  finds  a  buyer  for  the 
mark  and  the  business  with  which  it  is  used.  The 
would-be  purchaser  of  a  mark  should  investigate 
carefully  the  history  and  present  condition  of  a  mark 
which  he  contemplates  buying.    If  the  mark  was  at 


22  MODERN  AMERICAN  LAW  LECTURE 

one  time  abandoned,  the  date  of  adoption  and  use 
may  be  quite  recent,  due  to  the  abandonment  and 
subsequent  use  of  the  mark.  In  many  cases  trade- 
marks are  valuable  because  of  the  long  period  they 
have  been  validly  used.  The  evidence  of  an  early 
date  of  adoption  and  continuous  use  should  there- 
fore be  as  carefully  investigated  as  the  title  to  real 
estate. 

What  has  just  been  said  leads  to  a  consideration 
of  the  care  which  should  be  given  to  the  preservation 
of  the  evidence  of  adoption  and  use  of  a  mark.  The 
important  evidence  of  these  facts  should  be  carefully 
kept. 

Letters  and  memoranda  which  indicate  the  intent 
of  the  parties  to  adopt  a  certain  mark,  orders 
for  cuts  or  proofs  of  the  mark,  bills  or  receipts 
showing  purchase  of  labels,  stencils  or  other  methods 
of  producing  the  mark,  evidence  of  the  earliest  sale 
of  goods  with  the  mark  on  them,  and  evidence  of  con- 
tinuous use,  such  as  orders,  receipts,  letters  and  simi- 
lar papers,  covering  regular  periods  of,  say,  three 
to  six  months,  are  of  this  character.  Such  evidence 
as  this  will  enable  the  owner  of  a  mark  to  establish, 
when  necessary,  the  date  of  adoption  and  continuous 
use  of  his  mark. 

Without  some  such  means  of  showing  his  right  to 
a  mark  he  may  be  at  the  mercy  of  an  infringer  when 
his  mark  has  become  valuable.  If  evidence  of  the 
kind  specified  is  kept  it  will  enable  him  to  stand  a 
searching  investigation  of  the  title  to  his  mark  if  he 
desires  to  dispose  of  the  business  with  which  his 
mark  has  been  used. 


HOW  TO  PROTECT  TRADEMARKS  23 

REGISTRATION 

The  deposit  of  evidence  showing  commercial  use 
of  a  mark  with  a  government  or  other  agency  with 
a  request  that  a  certificate  be  issued  certifying  this 
fact  is  referred  to  as  an  application  for  registration. 
The  certificate  if  granted  is  a  certificate  of  registra- 
tion. Application  for  registration  may  be  made  to 
the  United  States  Patent  Office,  to  the  proper  state 
officer  of  most  of  the  states,  usually  the  Secretary  of 
State,  and  to  several  private  registration  bureaus  or 
agencies.  The  certificate  does  not  constitute  title  to 
the  mark;  it  is  evidence  of  a  claim  to  the  exclusive 
right  to  use  the  mark  upon  the  goods  specified  in  the 
certificate. 

Registration  in  the  United  States  Patent  Office 
and  the  proper  state  office  constitutes  a  public  record 
of  a  claim  to  the  mark.  This  record  is  more  perma- 
nent than  any  private  record  is  likely  to  be.  A  copy 
of  it  can  always  be  obtained  and  is  usually  made 
prima  facie  evidence  of  title  to  the  mark. 

Before  attempting  to  make  application  for  regis- 
tration under  the  United  States  trademark  law,  a 
copy  of  the  law  and  rules  relating  to  trademarks 
should  be  obtained  from  the  United  States  Patent 
Office.  These  should  be  read  carefully.  After  becom- 
ing familiar  with  the  law,  rules,  forms  and  classifica- 
tion, it  is  not  a  difficult  matter  to  modify  the  forms 
to  suit  the  particular  facts  applicable  to  any  mark. 
If  it  is  not  clear  in  what  class  of  merchandise  the 
particular  goods  should  be  classified,  select  the  class 
which  describes  generally  the  goods  upon  which  the 


24  MODERN  AMERICAN  LAW  LECTURE 

mark  has  been  used;  if  the  class  selected  is  not  cor- 
rect, the  Patent  Office  will  advise  the  applicant  to 
give  the  correct  class  in  an  amendment  of  the  appli- 
cation. The  important  decisions  of  the  Commis- 
sioner of  Patents  bearing  on  questions  which  arise 
under  the  trademark  law  are  published  weekly  in 
the  Official  Gazette  of  that  office,  and  in  yearly  vol- 
umes designated  as  the  Decisions  of  the  Commis- 
sioner of  Patents.  These  may  be  consulted  by  means 
of  digests  with  much  profit  upon  doubtful  points. 
Many  decisions  are  now  annually  rendered  by  the 
State  and  Federal  courts  upon  the  subject  of  trade- 
marks and  unfair  competition. 

All  marks  which  the  Patent  Office  regards  as  regis- 
trable are  published  at  least  once  in  the  Official 
Gazette  of  that  office.  This  gives  an  opportunity  to 
oppose  registration  to  any  one  who  believes  he  would 
be  injured.  The  procedure  in  such  a  case  and  in 
interference  cases  is  regulated  by  the  rules  of  the 
Patent  Office  and  those  prescribed  for  the  guidance 
of  the  Federal  courts  so  far  as  applicable. 

The  notice  of  registration  of  a  trademark  pre- 
scribed by  the  Federal  trademark  act  and  the  laws 
of  the  states  under  which  registration  is  secured 
should  always  be  used  with  the  mark.  Infringers 
are  often  deterred  from  using  a  registered  mark  if 
the  notice  of  registration  appears  prominently. 

INFRINGEMENT 

A  trademark  is  infringed  in  many  ways.  The  use 
by  another  of  the  identical  mark  previously  adopted 
and  used  on  the  same  goods  is  a  direct  violation  of 


HOW  TO  PROTECT  TRADEMARKS  25 

the  rights  of  the  first  user.  This  character  of  in- 
fringement is  not  often  encountered.  The  infringer 
usually  adopts  a  mark  slightly  different  from  the 
valuable  mark  of  another  or  applies  the  mark  to 
goods  of  a  somewhat  different  class.  He  uses  what 
the  courts  call  a  "colorable  imitation"  of  the  original 
mark.  This  is  the  class  of  infringement  against 
which  the  owner  of  a  trademark  must  protect  him- 
self.   How  may  he  do  this  ? 

The  owner  of  a  mark  should  not  permit  his  mark 
or  a  mark  so  similar  as  to  cause  confusion  to  be 
registered  in  the  United  States  Patent  Office  for  his 
goods  or  goods  of  the  same  general  class.  If  he  is 
convinced  he  has  a  prior  right  to  the  mark  he  may 
prevent  registration  by  a  proceeding  known  as  an 
opposition,  provided  for  by  the  trademark  act. 
Although  it  is  not  as  important  to  prevent  another 
from  obtaining  Federal  registration  if  the  owner 
uses  his  mark  only  on  goods  sold  in  the  United  States 
as  it  is  if  he  ships  to  foreign  countries,  it  is  inadvis- 
able to  allow  another  to  secure  a  certificate  which 
carries  with  it  the  presumption  of  title.  If  another 
than  the  real  owner  secures  registration  in  the  United 
States  he  may  register  his  mark  in  foreign  countries, 
relying  on  his  registration  here  to  perfect  it.  In 
the  majority  of  foreign  countries  the  first  to  register, 
in  the  absence  of  fraud,  is  entitled  to  the  mark  with- 
out regard  to  the  earlier  use  another  may  prove.  If 
another  has  secured  foreign  registration,  it  is  a  mat- 
ter of  great  difficulty  and  is  sometimes  impossible 
except  by  agreeing  to  the  terms  imposed  by  the  in- 
fringer, to  obtain  the  entry  of  goods  into  that  coun- 


26  MODERN  AMERICAN  LAW  LECTURE 

try.  It  is  very  important,  then,  to  prevent  another 
from  securing  registration  here  if  that  act  is  followed 
by  registration  abroad.  Two  points  should  there- 
fore be  kept  in  mind  in  this  connection:  (1)  An 
infringer  should  be  prevented  from  registering  your 
mark,  (2)  and  you  should  obtain  as  early  as  possible 
registration  in  those  countries  in  which  you  may  in 
the  near  future  expect  to  sell  your  goods. 

Goods  bearing  a  well  known  mark  are  often  sent 
into  this  country  by  a  foreign  infringer.  In  some 
lines  of  trade  such  infringement  is  persistent.  To 
prevent  this  and  to  protect  a  mark  a  certificate  of  the 
registered  mark  with  sufficient  ordinary  printed 
copies  should  be  deposited  with  the  Secretary  of  the 
Treasury  with  a  request  that  copies  be  sent  to  the 
proper  custom  officer  at  custom  houses  in  which  the 
infringing  goods  may  be  entered. 

Whether  state  registration  is  valuable  in  protect- 
ing a  mark  depends  upon  the  laws  of  the  particular 
state  in  which  the  trader  is  located. 

The  owner  of  a  trademark  is  not  required  to  spend 
his  time  hunting  for  infringement.  He  is  entitled  to 
suppose  that  his  rights  are  being  respected.  If  he 
promptly  notifies  an  infringer  and  requests  him  to 
stop  as  soon  as  the  infringement  has  been  called  to 
his  attention  he  has  taken  the  necessary  steps  to 
protect  his  mark.  The  notice  to  cease  infringement 
should,  however,  be  promptly  given. 

SUIT  TO  PROTECT  A  MARK 

If  an  infringer  refuses  to  stop  using  a  mark  after 
notice,  no  course  is  open  to  the  owner  if  he  wishes 


HOW  TO  PROTECT  TRADEMARKS  27 

to  protect  his  mark  but  to  bring  suit.  Long  delay 
may  result  in  loss  of  exclusive  right  to  the  mark ;  or 
if  tins  does  not  happen  the  allowance  of  damages 
from  infringement  may  be  refused.  The  notice  to 
an  infringer  to  stop  use  must  be  followed  up;  it  is 
better  not  to  give  notice  to  stop  infringing  unless  the 
notice  is  enforced. 

It  is  generally  advantageous  to  bring  suit  in  the 
Federal  courts,  although  this  is  not  always  true.  The 
character  of  the  parties,  their  location,  the  subject 
matter  and  other  circumstances  must  be  considered. 
Suit  may  be  brought  in  these  courts  on  any  mark 
registered  under  either  of  the  United  States  trade- 
mark laws.  If  the  mark  has  not  been  registered 
under  these  laws,  whether  suit  may  be  brought  in  the 
Federal  courts  depends  upon  diversity  of  citizenship 
and  the  value  of  the  subject  matter  of  the  suit.  Suit 
may  of  course  be  brought  in  the  state  courts  and  it 
is  sometimes  advantageous  to  sue  in  these  courts. 
The  character  of  the  trademark  laws  of  the  state  in 
which  the  suit  may  be  brought  is  often  a  controlling 
element. 

In  an  action  at  law  damages  may  be  recovered  for 
the  wrongful  use  of  a  mark.  An  injunction  to  pre- 
vent the  infringer  from  continuing  the  use  of  the 
mark  is  what  is  ordinarily  most  desired.  A  suit  in 
equity  in  which  the  grant  of  an  injunction  is  asked 
is  therefore  the  usual  action  taken  to  stop  infringe- 
ment. The  decision  of  a  court  holding  that  the  com- 
plainant's mark  is  valid  and  infringed  and  an  order 
that  the  defendant  stop  infringing,  which  is  referred 
to  as  an  injunction,  are  the  best  means  of  protection 


28  MODERN  AMERICAN  LAW  LECTURE 

against  loss  from  the  fraudulent  use  by  another  of  a 
valid  mark. 

IMPORTANT  QUESTIONS 

Whether  the  owner  of  a  trademark  can  license 
another  to  use  his  mark  upon  the  same  kind  of  goods 
upon  which  he  continues  to  use  it  without  forfeiting 
any  of  his  rights  is  a  difficult  question  which  has  not 
been  satisfactorily  settled.  There  are  cases  in  which 
the  rights  of  a  licensee  of  a  trademark  have  been 
protected  against  a  third  party;  and  the  licensor  of 
a  patent  has  a  right  to  be  protected  in  the  use  of  a 
trademark  affixed  to  his  patented  article;  but  it  is 
very  doubtful  whether  the  right  to  the  exclusive  use 
of  a  trademark  is  not  lost  by  the  acquiescence  of  the 
owner  in  the  use  of  his  mark  by  another.  A  trade- 
mark is  a  distinctive  mark  of  ownership  which  iden- 
tifies the  producer  or  the  party  who  guarantees  the 
article.  If  the  mark  is  used  by  many  it  ceases  to 
be  an  identifying  mark.  It  would  probably  be  held 
that  such  use  was  fraudulent.  Under  the  present  state 
of  the  law,  to  license  the  use  of  a  mark  jeopardizes 
the  right  to  its  exclusive  use. 

The  question  whether  a  trader  may  have  more 
than  one  mark  for  his  goods  has  been  raised,  and 
although  there  are  some  decisions  of  the  courts  to 
the  effect  that  one  mark  only  may  lawfully  be 
used  on  one  kind  of  goods,  it  is  now  generally  ac- 
knowledged that  two  or  more  marks  may  be  used, 
either  together  or  separately.  A  word  mark,  for 
instance,  may  be  more  attractive  to  one  class  of  cus- 
tomers and  may  serve  to  identify  the  goods,  while 


HOW  TO  PROTECT  TRADEMARKS  29 

a  picture  or  some  artistic  design  may  appeal  to  an- 
other class.  There  is  no  good  reason  why  a  merchant 
may  not  take  advantage  of  two  or  more  methods  of 
identifying  his  goods.  Some  users  of  trademarks 
have  one  mark  which  they  place  on  all  their  goods, 
and  many  others  which  they  use  to  identify  each  par- 
ticular kind.  This  practice  is  undoubtedly  a  good 
one  for  the  manufacturer  or  merchant  who  puts  on 
the  market  many  different  varieties  of  goods  all  of 
the  same  general  class. 

The  manner  of  advertising  a  good  trademark  de- 
serves careful  consideration,  for  it  must  be  brought 
before  the  public  in  a  way  that  compels  attention  if 
it  is  to  succeed.  This  should  be  kept  in  mind.  A\  ner- 
ever  the  mark  appears,  whether  on  the  goods,  in 
newspapers,  magazines,  circulars  or  billboard  adver- 
tising, it  should  be  so  used  that  it  will  create  a  defi- 
nite, cumulative  impression.  To  dress  up  the  mark 
at  one  time  so  that  it  cannot  be  recognized  as  the 
same  mark  that  is  advertised  at  another  time,  is 
wasteful.  The  attention  of  the  public  must  be  com- 
pelled by  again  and  again  producing  the  same  im- 
pression. A  "moving"  mark,  that  is,  one  which  may 
be  changed  to  excite  interest  without  changing  the 
impression  produced,  is  to  be  desired.  The  value  of 
movement  is  as  appreciable  in  trademarks  as  in 
literature. 

The  practice  is  growing  of  having  in  addition  to 
a  trademark,  a  phrase,  or  slogan  which  is  used  with 
the  mark.  This  phrase  is  often  descriptive  and  may 
be  protected  by  a  suit  for  unfair  competition.  It 
adds  much  to  the  value  of  the  mark  when  appro- 


30  MODERN  AMERICAN  LAW  LECTURE 

priate.  Some  well  known  slogans  are  "Quality  is 
Remembered  Long  After  the  Price  is  Forgotten," 
"It's  the  Process,"  "There's  a  Reason."  A  good 
slogan  or  advertising  phrase  helps  to  advertise  and 
protect  a  trademark.  Trademark  owners  should  by 
all  means  adopt  a  slogan  if  they  have  enough  genius 
to  discover  a  good  one.  It  will  help  to  keep  off  in- 
fringers of  the  trademark  with  which  it  is  used. 

Those  who  find  it  advantageous  to  use  trademarks 
should  remember  that  a  complicated  mark  is  not  a 
good  mark ;  it  should  be  simple  and  clean  cut.  If  a 
picture  is  used  instead  of  a  word,  it  should  be  one 
that  all  can  readily  designate  by  name.  A  mark  with- 
out a  name  is  a  weak  mark.  A  word  mark  should 
not  be  one  that  is  difficult  to  pronounce  or  which  may 
be  pronounced  in  different  ways.  People  dislike  to 
run  the  risk  of  giving  a  wrong  pronunciation  to  a 
word,  and  will  often  avoid  pronouncing  such  a  word ; 
and  every  time  this  occurs  the  user  is  deprived  of 
some  advertising. 

One  of  the  most  valuable  qualities  of  a  trademark 
is  that  it  acts  as  a  means  of  establishing  for  the  pro- 
ducer a  reputation  for  his  goods  directly  with  the 
consumer.  Without  a  trademark  or  the  equivalent 
the  manufacturer  is  at  the  mercy  of  the  jobber  or  the 
retailer. 

INTERNATIONAL  PROTECTION 

Trademark  law  as  well  as  other  branches  of  the 
law  has  been  developed  and  improved  by  those  who 
plan  and  work  to  bring  about  an  ideal  condition. 

The  right  to  a  trademark  should  not  be  limited 


HOW  TO  PROTECT  TRADEMARKS  31 

to  any  particular  country ;  exclusive  right  to  it  should 
exist  wherever  the  goods  upon  which  it  is  used  are 
sold.  Full  protection  will  not  be  accorded  a  trade- 
mark until  the  exclusive  right  to  it  is  respected  every- 
where. Full  protection  cannot  now  be  obtained  in 
all  countries  without  relatively  very  great  expense 
and  trouble.  The  laws  of  all  countries  will  some  day 
be  so  improved  that  the  first  to  adopt  and  use  a  trade- 
mark will  be  given  the  same  rights  to  his  mark  in 
foreign  countries  as  in  his  own.  This  will  be  an 
ideal  condition  compared  with  the  present  status  of 
this  class  of  property. 

A  long  step  in  the  right  direction  was  made  when 
the  articles  of  the  first  Convention  for  the  Protection 
of  Industrial  Property  were  adopted  at  Paris,  March 
20,  1883.  The  United  States  ratified  this  conven- 
tion in  1887.  It  was  decided  by  the  Attorney  General 
of  the  United  States,  however,  that  the  provisions 
of  the  convention  are  not  binding  upon  this  country 
in  the  absence  of  statutory  law  to  carry  the  various 
provisions  into  effect ;  and  not  all  the  provisions  have 
received  recognition.  In  the  four  conventions  held 
since  1883,  the  last  having  been  held  in  Washington 
in  1911,  some  important  recommendations  have  been 
made,  but  no  important  legislation  in  the  United 
States  on  the  subject  has  been  enacted  since  the  trade- 
mark law  of  1905  was  passed. 

An  International  Bureau  for  the  registration  of 
trademarks  was  established  in  1893  under  one  of  the 
Articles  of  the  International  Convention  of  1883. 
This  Bureau  is  located  at  Berne,  Switzerland,  and 
enables  the  citizens  of  the  countries  which  are  par- 


32  MODERN  AMERICAN  LAW  LECTURE 

ties  to  the  establishment  of  it  to  register  their  trade- 
marks in  those  countries  by  making  a  single  applica- 
tion to  their  own  government  with  a  request  that 
registration  be  granted  in  all  the  countries  which  are 
parties  to  the  establishment  of  the  International 
Bureau.  Registration  on  one  application  is  in  this 
way  obtained  in  the  home  country  and  in  the  other 
countries  of  the  Union  upon  the  payment  of  a  very 
small  fee  in  comparison  with  the  total  fees  charged 
for  independent  applications  in  all  the  countries.  The 
United  States  is  not  a  member. 

Efforts  have  been  made  in  America  to  establish 
unions  and  registration  bureaus  for  the  protection 
of  trademarks.  In  1910  the  Fourth  International 
Congress  of  the  American  States  was  held  in  Buenos 
Ayres,  Argentine,  attended  by  the  representatives  of 
twenty  nations.  This  Congress  recommended  the 
establishment  of  registration  bureaus  at  Havana  and 
Rio  Janeiro  through  which  registration  could  be 
effected  in  all  the  states  of  the  Union.  Not  a  suffi- 
cient number  of  states  have  as  yet  ratified  the  agree- 
ment to  enable  these  bureaus  to  be  established. 

To  establish  some  method  of  obtaining  interna- 
tional protection  of  trademarks  of  the  general  char- 
acter presented  by  these  conventions  would  be  most 
advantageous  to  all  interested  in  trademarks.  Hon- 
est dealing  and  fair  trade  demand  international 
recognition  of  the  rights  of  a  trademark  owner. 


305  De  Neve  Drive    pAL  UBRARY  FACILITV 


Cfciplord  - 

PAMPHLET  BINDER 

^^^    Syracuse,  N.  Y. 
Srockfon,  Calif. 


UCSOUTHE 


AA    000  819  099    3 


Mifornia 
ional 
ility 


Unive 

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